Dell Inc. v. Prashant Chhibber
Claim Number: FA1805001785651
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Prashant Chhibber (“Respondent”), New Dehli, India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-supports.com> and <dellhelpsupport.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2018; the Forum received payment on May 9, 2018.
On May 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dell-supports.com> and <dellhelpsupport.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dell-supports.com, postmaster@dellhelpsupport.com. Also on May 9, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Dell, Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant does business under the DELL mark, which has become very famous in the United States and many other countries. Complainant claims rights in the DELL mark based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Respondent’s <dell-supports.com> and <dellhelpsupport.com> domain names are confusingly similar to Complainant’s DELL mark because each incorporates the DELL mark in its entirety and add the generic phrase “help support” or “supports” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <dell-supports.com> or <dellhelpsupport.com> domain names. Respondent is not commonly known by the name and Complainant has not given Respondent license to use the DELL mark. Additionally, Respondent has not used the name for a bona fide offering of goods or services or for legitimate noncommercial or fair use. Instead, Respondent uses the domain names to pass itself off as Complainant and to gain Internet users’ personal information.
Respondent has engaged in a pattern of bad faith registration and use by registering multiple domain names that incorporate Complainant’s marks. Respondent also attempts to disrupt Complainant’s business by diverting Internet users to a competing website. Additionally, Respondent uses the domain names to attract Internet users and commercially benefit by creating confusion with Complainant’s DELL mark. Further, Respondent uses the domain name to pass itself off as Complainant and phish for Internet users’ personal information. Finally, Respondent’s use of a disclaimer does not mitigate bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <dell-supports.com> and <dellhelpsupport.com> domain names.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the DELL mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Registration of a mark with the USPTO is sufficient to establish rights in the mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel finds that Complainant’s registration of the mark is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <dell-supports.com> and <dellhelpsupport.com> domain names are confusingly similar to the DELL mark because each adds a generic phrase and the gTLD “.com” to the fully incorporated mark. The addition of a generic term and a gTLD may not sufficiently distinguish a domain name from a mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Respondent’s <dell-supports.com> domain name contains a hyphen; however, under the Policy the addition of a hyphen does not negate confusing similarity. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel finds that the <dell-supports.com> and <dellhelpsupport.com> domain names are confusingly similar to Complainant’s DELL mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <dell-supports.com> or<dellhelpsupport.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the DELL mark. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under ¶ 4(c)(ii), WHOIS information can be used to support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of the record identifies the registrant as “Prashant Chhibber.” The Panel finds that Respondent is not commonly known by the <dell-supports.com> or <dellhelpsupport.com> domain names.
Complainant further argues Respondent lacks rights or legitimate interests in the <dell-supports.com> and <dellhelpsupport.com> domain names because Respondent failed to use the domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the domain names to pass itself off as Complainant in order to promote services that are in direct competition with services offered by Complainant. Use of disputed domain names to pass off as a Complainant may not be considered a bona fide offering or fair use under Policy ¶¶ 4(c)(i) & (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Here, Respondent attempts to replicate Complainant’s website by incorporating identical color schemes and the DELL mark in its entirety. The Panel finds that Respondent failed to use the <dell-supports.com> and <dellhelpsupport.com> domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Complainant alleges that Respondent’s inclusion of a disclaimer does not defeat a finding of bad faith. Typically, use of a disclaimer does not mitigate finding of bad faith under Policy ¶ 4(a)(iii)”). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”). The Panel finds that Respondent’s use of a disclaimer does not mitigate bad faith.
Complainant argues Respondent has engaged in a pattern of bad faith registration and use of Complainant’s trademarks in domain names. Registering multiple domain names that incorporate Complainant’s mark can evidence a pattern of bad faith and registration under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Here, Respondent registered the <dell-supports.com> and <dellhelpsupport.com> domain names, both of which incorporate Complainant’s DELL mark in its entirety. The Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant alleges Respondent uses the disputed domain names to promote services that are in direct competition with those offered by the Complainant. Use of a domain name to promote competing services can be evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) Here, Complainant alleges that screenshots of the <dell-supports.com> and <dellhelpsupport.com> websites indicate that Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).
Complainant argues Respondent uses the disputed domain names to create confusion with Complainant’s DELL mark to attract users in order to commercially benefit. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may evidence bad faith per Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Respondent’s domain names resolve to websites that copy the look and feel of Complainant’s official <dell.com> website and prominently display Complainant’s DELL mark. The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant further alleges Respondent had actual knowledge of Complainant’s rights in the mark due to the fame of Complainant’s DELL mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s DELL mark is used worldwide in over 180 countries in connection with its products and services. Therefore, due to the fame of Complainant’s mark, and the use of the mark by Respondent, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <dell-supports.com> and <dellhelpsupport.com> domain names were registered and used and they were registered and used in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <dell-supports.com> and <dellhelpsupport.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 1, 2018
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